Eighth Circuit Follows Supreme Court's Directive on Issue Preclusion and Vacates Judgment in B&B Hardware Trademark Case | Practical Law

Eighth Circuit Follows Supreme Court's Directive on Issue Preclusion and Vacates Judgment in B&B Hardware Trademark Case | Practical Law

In B & B Hardware, Inc. v. Hargis Industries, Inc., the US Court of Appeals for the Eighth Circuit, hearing the case on remand from the US Supreme Court, vacated and remanded a district court judgment in favor of  Hargis Industries, Inc., an accused trademark infringer. The Eighth Circuit reasoned that the district court should have given preclusive effect to the Trademark Trial and Appeal Board's (TTAB) ruling that Hargis's use of the SEALTITE trademark created a likelihood of confusion with B & B Hardware, Inc.'s SEALTIGHT mark.

Eighth Circuit Follows Supreme Court's Directive on Issue Preclusion and Vacates Judgment in B&B Hardware Trademark Case

by Practical Law Intellectual Property & Technology
Published on 26 Aug 2015 • USA (National/Federal)
In B & B Hardware, Inc. v. Hargis Industries, Inc., the US Court of Appeals for the Eighth Circuit, hearing the case on remand from the US Supreme Court, vacated and remanded a district court judgment in favor of Hargis Industries, Inc., an accused trademark infringer. The Eighth Circuit reasoned that the district court should have given preclusive effect to the Trademark Trial and Appeal Board's (TTAB) ruling that Hargis's use of the SEALTITE trademark created a likelihood of confusion with B & B Hardware, Inc.'s SEALTIGHT mark.
On August 25, 2015, the US Court of Appeals for the Eighth Circuit issued an opinion in B & B Hardware, Inc., v. Hargis Industries, Inc., after receiving the case on remand from the US Supreme Court (Nos. 10-3137,11-1247, (8th Cir. Aug. 25, 2015)).
The decision follows nearly two decades of USPTO proceedings and civil litigation over whether defendant Hargis Industries, Inc.'s use of the trademark SEALTITE for metal fasteners causes an impermissible likelihood of confusion with B & B Hardware, Inc.'s SEALTIGHT metal fastener mark. After supplemental briefing, the Eighth Circuit:
  • Noted the Supreme Court's directive that issue preclusion should apply to Trademark Trial and Appeal Board (TTAB) decisions in trademark infringement actions when:
    • the issue decided by the TTAB is materially the same as that before the district court; and
    • the ordinary elements of issue preclusion are met.
  • Applied the Supreme Court standard to the facts of the case and ruled that:
    • the uses of the marks reviewed by the TTAB were materially the same as the uses adjudicated by the district court;
    • the TTAB properly compared the marks' use in the marketplace when it determined the likelihood of confusion issue; and
    • the ordinary elements of issue preclusion were met.
  • Vacated the district court's judgment and remanded the case to the US District Court for the Eastern District of Arkansas with instructions to give preclusive effect to the TTAB's likelihood of confusion decision and to determine the appropriate award of remedies to B & B for Hargis's infringement.
For a full history of the case, see Legal Updates, Supreme Court: TTAB's Likelihood of Confusion Decisions Can Have Preclusive Effect and No Preclusive Effect to TTAB's Likelihood of Confusion Findings: Eighth Circuit.